The Federal Court, on appeal from a decision of the Australian Trade Marks Office, has recently rejected an application by Chocolaterie Guylian N.V. (Guylian) to register its seahorse shape as a trade mark on the basis that the shape was not capable of distinguishing Guylian’s goods.

Guylian is a well known Belgian company producing a seashell range of chocolates, which are distributed in 132 countries. The seahorse shape features in the seashell range and the range has been promoted and sold in Australia since the 1980s.

The Trade Marks Act 1995 (Cth) does specifically include shapes within the definition of sign and there are numerous shapes which are registered as a trade mark in Australia.
The Federal Court confirmed the Trade Marks Office’s decision to refuse registration of Guylian’s seahorse shape. The Federal Court held that the shape:

a) was not inherently distinctive to the degree required by section 41(3) of the Trade Marks Act 1995 (Cth) (TMA), and

b) does not and will not distinguish Guylian’s chocolate and praline goods from those of other rival traders as required by section 41(5) of the TMA.

Some key aspects of the decision:

Guylain argued that its shape is a “fanciful stylised” representation of a seahorse and as such, inherently distinctive. Justice Sundberg considered that, on balance, an average consumer would see it as a relatively ordinary representation of a seahorse.

Justice Sundberg did not rule out the possibility that a shape reminiscent of a real animal or creature could be considered inherently distinctive. This would ultimately depend on whether other traders would want to use the shape in the ordinary course of business. However, there was sufficient evidence from the Registrar that other traders selling marine inspired chocolates, such that other chocolate producers might legitimately want to use a seahorse shape.

Even though Guylian’s seahorse related marketing had included seahorse shaped boxes / packaging and sponsorship and promotion of, a marine conservation research project named Project Seahorse, Justice Sundberg did not accept that these uses were sufficient to educate the public to recognise the seahorse shape as a badge of origin.

The prominence of the GUYLIAN trade mark and the stylised engraved ‘G’ logo in packaging reduced the significance of the shape as a trade mark. Therefore, use of the seahorse shape on the packaging should be considered as descriptive of the boxes’ contents, rather than as functioning as a trade mark.

Guylian sought to rely on survey evidence which showed just over 40% of survey respondents recognised the seahorse shape as belonging to Guylian. However, Justice Sundberg did not find that this survey evidence was sufficient.

This case highlights that it can be difficult to secure registration of a shape mark, even in the face of extensive use and reputation demonstrated through survey evidence.

Accompanying branding in the evidence of use, such as word marks and logos may counter against registration in that it may be treated as diluting the trade mark distinctiveness of the applied for shape.
Evidence should demonstrate that the public has been educated to understand the shape as a badge of origin and care needs to be taken in relying on survey evidence.

“companies should know if enabling illegal activities” http://tinyurl.com/lwfosf
If there is intentional inducement for another group to infringe a trade mark, or if group “continues to supply its product to one whom it knows or has reason to know is engaging in trade mark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.” Inwood Labs, Inc v Ives Labs, Inc cited fromhttp://www.ipkat.com/